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Effect on non-registration on infringement proceedings

68. Where by virtue of a transaction, instrument or event to which section 33 above applies a person becomes the proprietor or one of the proprietors or an exclusive licensee of a patent and the patent is subsequently infringed, before the transaction, instrument or event is registered, in proceedings for such an infringement, the court or comptroller shall not award him costs or expenses unless1 -

(a) the transaction, instrument or event is registered Rule 47 within the period of six months beginning with its date; or

(b) the court or the comptroller is satisfied that it was not practicable to register the transaction, instrument or event before the end of that period and that it was registered as soon as practicable thereafter.

Notes:Manual of Patent Practice
This section now appears to give the claimant an option of whether to claim damages dating back before the transaction was registered (if later than 6 months after the transaction occurred, and presuming the defendant was aware of the patent: s62(1)) and be unable to claim any costs or expenses from the defendant, if successful, or to claim damages only back to when the transaction was registered and be able to claim costs.

Article 14 of directive 2004/48/EC (the Enforcement Directive), entitled "Legal costs", provides that "Member States shall ensure that reasonable and proportionate legal costs and other expenses incurred by the successful party shall, as a general rule, be borne by the unsuccessful party, unless equity does not allow this." It is questionable whether s68, being a blanket rule, complies with this provision.

Where a late-registered exclusive licensee is joined as a co-claimant with the proprietors, the section would appear to take effect unless the exclusive licensee expressly disclaims any claim in respect of any pre-registration infringing acts.

On its literal wording, it appears that the section may apply to all costs in proceedings and therefore include the costs of defending an invalidity claim and costs referable to later infringements. It may be that reference to Article 14 could be used to confine the scope of this provision.

"Section 68 was then amended. The right to damages in respect of an infringement is no longer qualified by it. But there is nothing in its wording to suggest that previously accrued rights have been expanded by an increase in the scope of the damages that can be claimed. The section does not merely remove some procedural bar to the claim to damages. It makes a change in the substantive law. As a matter of construction I find it hard to see how it can affect previously accrued rights (or obligations)". (para 87)

In Schutz (UK) Ltd v Werit UK Ltd & Anor [2011] EWCA civ 927, the position regarding recovering costs in relation to a non-registered transaction was determined to be: "if and in so far as a claim covers a period for which a relevant transaction was not registered when it should have been (a "non-registration period") then any costs incurred during that period cannot be recovered. Costs for periods outside a non-registration period are recoverable in the usual way" (para 21).
In Schutz (UK) Ltd v Werit UK Ltd & Anor [2011] EWCA Civ 1337, the issue of non-registration of a later revised exclusive licence was considered and found not to make any difference to recovery of costs, since it was the fact of a licence, not its detail, that mattered as far as public notice was concerned (see paras 12-13) .